(334) USPTO to Provide Electronic Access to
Cited U.S. Patent References with
Office Actions and Cease Supplying Paper Copies
Summary
In support of its 21st Century Strategic Plan goal of increased
patent e-Government, beginning in June 2004, the United States Patent
and Trademark Office (Office or USPTO) will begin the phase-in of its
E-Patent Reference program and hence will: (1) provide downloading
capability of the U.S. patents and U.S. patent application publications
cited in Office actions via the E-Patent Reference feature of the
Office's Patent Application Information Retrieval (PAIR) system; and
(2) cease mailing paper copies of U.S. patents and U.S. patent
application publications with office actions except for
citations made during the international stage of an international
application under the Patent Cooperation Treaty (PCT). In order to use
the new E-Patent Reference feature applicants must: (1) obtain a
digital certificate and software from the Office; (2) obtain a customer
number from the Office; and (3) properly associate patent applications
with the customer number. Alternatively, copies of all U.S. patents and
U.S. patent application publications can be accessed without a digital
certificate from the USPTO web site, from the USPTO Office of Public
Records, and from commercial sources. The Office will continue the
practice of supplying paper copies of foreign patent documents and
non-patent literature with Office actions. Paper copies of cited
references will continue to be provided by the USPTO for international
applications under the PCT during the international stage.
Deployment of E-Patent Reference System
The USPTO will deploy the full E-Patent Reference program
starting in June of 2004. In accordance with the schedule shown below,
paper copies of cited U.S. patents and U.S. patent application
publications will cease to be mailed to applicants with Office actions
in the indicated Technology Centers (TCs). Paper copies of foreign
patents and non-patent literature will continue to be included with
office actions.
Schedule
June 2004 TCs 1600, 1700, 2800 and 2900
July 2004 TCs 3600 and 3700
August 2004 TCs 2100 and 2600
Description of E-Patent Reference System
On December 1, 2003, the Office made available a new feature in
the Office's Private PAIR system, E-Patent Reference, to allow
convenient downloading and printing of cited U.S. patents and U.S.
patent application publications. A notice announcing this system was
published in the Official Gazette, (see Notice of Office Plan to
Cease Supplying Copies of Cited U.S. Patent References With Office
Actions, and Pilot to Evaluate The Alternative of Providing Electronic
Access to Such U.S. Patent References, 1277 Off. Gaz. Pat.
Office 156 (Dec. 23, 2003)). The same notice also announced the
Office's future plan to cease supplying copies of cited U.S. patents
and patent application publications with Office actions.
The E-Patent Reference system allows an authorized user of
Private PAIR to download the U.S. patents and U.S. patent application
publications cited on a form PTO-892 in Office actions, as well as U.S.
patents and U.S. patent application publications submitted by
applicants as part of an information disclosure statement (IDS) on form
PTO/SB/08 (1449). The retrieval of some or all of the documents is

performed in one downloading step with each of the documents encoded as
Adobe Portable Document format (.pdf) files.
The E-Patent Reference system was used by applicants during a
pilot program in December 2003 and January 2004. In response to some
technical issues discovered by users, changes to make the system more
compatible with users' firewalls and office systems were made during
the pilot.
Consequently, applicants should expect to start receiving
Office actions (in patent applications and during patent reexamination
proceedings) without paper copies of cited U.S. patents and U.S. patent
application publications in accordance with the schedule above. These
documents will be available through the E-Patent Reference system for
downloading using Private PAIR. Foreign patents and non-patent
literature will continue to be provided to the applicant on paper.
Communications from the Office during the international stage of an
international application under the PCT will continue to include paper
copies of all references, including U.S. patents and U.S. patent
application publications.
In summary, all U.S. patents and patent application
publications are available on the USPTO web site, from the Office of
Public Records and from commercial sources. Additionally, a simple
system for downloading the cited U.S. patents and patent
application publications has been established for applicants, called
the E-Patent Reference system. As E-Patent Reference and Private PAIR
require participating applicants to have a customer number, retrieval
software and a digital certificate, all applicants are strongly
encouraged to contact the Patent Electronic Business Center to acquire
these items. To be ready to use this system by June 1, 2004, contact
the Patent EBC as soon as possible.
Steps to Use the E-Patent Reference Feature
Access to Private PAIR is required to utilize E-Patent
Reference. If you do not already have access to Private PAIR, the
Office urges practitioners and applicants not represented by a
practitioner to: (1) obtain a no-cost USPTO Public Key Infrastructure
(PKI) digital certificate; (2) obtain a USPTO customer number; (3)
associate all of their pending and new application filings with their
customer number; (4) install free software (supplied by the Office)
required to access Private PAIR and the E-Patent Reference; and (5)
make appropriate arrangements for Internet access.
Instructions for performing the 5 steps:
Step 1: Full instructions for obtaining a PKI
digital certificate are available at the Office's Electronic
Business Center (EBC) web page at:
<http://www.uspto.gov/ebc/downloads.html>. Note that a
notarized signature will be required to obtain a digital certificate.
Step 2: To get a Customer Number, download
and complete the Customer Number Request form, PTO-SB/125, at:
http://www.uspto.gov/web/forms/sb0125.pdf. The completed
form can then be transmitted by facsimile to the Patent Electronic
Business Center at (703) 308-2840, or mailed to the address on the
form. If you are a registered attorney or agent, then your registration
number must be associated with your customer number. This association
is accomplished by adding your registration number to the Customer
Number Request form.
Step 3: A description of associating a customer number with the
correspondence address of an application is described at the EBC Web
page at:

http://www.uspto.gov/ebc/registration_pair. html.
Step 4: The software for electronic filing
is available for downloading at www.uspto.gov/ebc. Users
can also contact the EFS Help Desk at (703) 305-3028 and request a copy
of the software on compact disc. Users will also need Adobe Acrobat
Reader, which is available through a link from the USPTO web site.
Step 5: Internet access will be required which
applicants may obtain through a supplier of their own choice. As images
of large documents must be downloaded, high-speed Internet access is
recommended.
The E-Patent Reference feature is accessed using a button on
the Private PAIR screen. Ordinarily all of the cited U.S. patent and
U.S. patent application publication references will be available over
the Internet using the Office's new E-Patent Reference feature. The
size of the references to be downloaded will be displayed by E-Patent
Reference so the download time can be estimated. Applicants and
registered practitioners can select to download all of the references
or any combination of cited references. Selected references will be
downloaded as complete documents in the Portable Document Format
(.pdf). The downloaded documents can be viewed and printed using
Adobe's Acrobat Reader program and other software.
Other Options
The E-Patent Reference function requires the applicant to use
the secure Private PAIR system, which establishes confidential
communications with the applicant. Applicants using this facility must
receive a digital certificate, as described above. Other options for
obtaining patents which do not require the digital certificate include
the USPTO's free Patents on the Web program
(http://www.uspto.gov/patft/index.html). The USPTO's Office of Public
Records also supplies copies of patents and patent application
publications for a fee
(http://ebiz1.uspto.gov/oems25p/index.html). Commercial
sources also provide patents and patent application publications.
Section 707.05(a) of the Manual of Patent Examining Procedure,
which currently provides that copies of cited references are in general
automatically furnished without charge to applicant together with the
Office action in which they are cited, will be revised in due course
for consistency with the practice announced in this notice.
Comments
The Office published a notice announcing its plan to cease
supplying copies of cited U.S. patent references with Office actions,
(see Notice of Office Plan to Cease Supplying Copies of Cited
U.S. Patent References With Office Actions, and Pilot to Evaluate The
Alternative of Providing Electronic Access to Such U.S. Patent
References, 1277 Off. Gaz. Pat. Office 156 (Dec. 23,
2003)). The Office received numerous comments in response to this
notice. A summary of representative comments and the Office's responses
to the comment, grouped by topics, follows:
Comment 1: The requirement to use the Office's
customer number/digital certificate shifts the responsibility of
producing paper copies to the applicant. A number of comments indicated
that adopting the proposal would result in an increased responsibility
for the applicant, as the applicant or applicant's representative would
be required to print the references.
Response: The USPTO is implementing the E-Patent
Reference program as part of the Office's e-Government initiative and

to align funding priorities to the Patent Initiatives, including the
hiring of examiners. Applicants can purchase copies of U.S. patents and
patent application publications from a variety of vendors if they
choose not to print copies through the E-Patent Reference system.
The USPTO is moving toward electronic filing and processing of
both patent applications and trademark applications. The policy
announced in this notice is simply a step towards a more fully
automated patent examination process. By analogy, briefs and court
opinions that include case citations do not include paper
copies of the cited cases. Rather, the cited cases are available via
books or electronic databases. Similarly, the USPTO will no longer
provide paper copies of U.S. patents and patent application
publications since they are available electronically free of charge.
Finally, this change will avoid duplication and waste since an
applicant may not need to print out every page of a cited U.S. patent
or patent application publication.
Comment 2: Adopting the proposal would hurt the solo practitioners and
pro se applicants the most, which is unfair.
Response: The solo practitioners and pro se
applicants have the same electronic access as the larger firms and
corporations, available instantaneously over the Internet. If a solo
practitioner or a pro se applicant chooses not to print
copies of U.S. patents and patent applications publications through the
USPTO Patents on the Web system or through the E-Patent Reference
system, commercial sources that provide patents very quickly and
inexpensively are available, and copies of U.S. patents and patent
application publications are also available at the Patent and Trademark
Depository Libraries (PTDLs). Additionally, the cost of patents if
ordered from the USPTO Office of Public Records is very reasonable
($3).
Comment 3: Some applicants indicated that the service
is reliable and quick, and consistent with the electronic commerce
initiatives in their law firms and businesses.
Response: As pointed out by some respondents,
electronic copies of the references are very usable, available without
mail delays, and capable of being sent to clients, other attorneys and
experts by electronic means.
Comment 4: The statute 35 USC Sec. 132 requires the
Office when sending a rejection to state the reasons "together with
such information and references as may be useful in judging of the
propriety of continuing the prosecution of his application".
Response: The requirement that an Office action
contain "such information and references as may be useful in judging
of the propriety of continuing the prosecution of his application"
was added to the patent laws in the Patent Act of 1870. The
circumstances surrounding this provision reveal that it requires that
an Office action identify the prior inventions or patents that are
relied upon in making a rejection, not that it requires that an Office
action be accompanied by copies of the cited references. The USPTO did
not even begin providing copies of cited references with Office actions
until 1965, when 35 U.S.C. Sec. 41 was amended to authorize (but not
require) the USPTO to provide copies of patents cited in Office actions
without charge. See 35 U.S.C. Sec. 41(e) ("[t]he Director
may provide any applicant issued a notice under [35 U.S.C.
Sec. 132] with a copy of the specifications and drawings for all patents
referred to in that notice without charge") (emphasis added).
Nevertheless, the Office will provide access to U.S. patents and patent
application publications, albeit not in paper form.

Comment 5: A number of users suggested that the Office provide paper
references at an extra cost.
Response: The Office of Public Records does offer that
service, at a reasonable cost, and it is available through a number of
delivery channels. See 37 CFR 1.19 (a). Commercial services
also provide U.S. reference documents, in person, by mail, and over the
Internet.
Comment 6: Some comments indicated that the length of
the pilot should have been expanded.
Response: E-Patent Reference system will continue
through the end of May to allow applicants to become familiar with
E-Patent Reference and to be sure all technical concerns are addressed.
For Further Information Contact
Questions concerning the E-Patent Reference feature and
questions concerning the operation of the PAIR system should be
directed to the Patent EBC at the USPTO at (866) 217-9197. The EBC may
also be contacted by facsimile at (703) 308-2840 or by e-mail at
EBC@uspto.gov. Questions about this notice may be directed to Jay
Lucas, at Jay.Lucas@uspto.gov and Rob Clarke, at Robert.Clarke@uspto.gov.
NICHOLAS P. GODICI
Commissioner for Patents
[1282 OG 109]